Copyright registration in China has become a common means for Chinese enterprises to protect their works. However, as trademark squatting becomes increasingly common overseas, achieving comprehensive international trademark protection can be both difficult and costly. An increasing number of applicants are therefore considering whether a trademark that has been registered as a copyrighted work in China can also be enforced in other countries that are members of the Berne Convention.
Under the Berne Convention, copyright arises automatically upon the creation of a work and is recognized in all member countries of the Convention, without registration being required to establish the right.
However, the following points should be noted:
1. Automatic protection does not mean uniform global protection, as the legal requirements may differ from country to country.
2. Although copyright registration is not a prerequisite for copyright to arise, registration in certain overseas jurisdictions may still have significant practical value, particularly when enforcing rights abroad, obtaining legal remedies and realizing the commercial value of copyrighted works.
Overseas copyright registration may generally be divided into the following categories:
Scenario 1:
No copyright registration is required, and there is no official local copyright registration authority—Singapore as an example
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According to the official explanation provided by the Intellectual Property Office of Singapore (IPOS), Singapore does not administer a copyright registration system. Copyright therefore cannot be registered in Singapore. However, Singapore is a member of the Berne Convention, and a copyright certificate obtained through registration in China may be recognized in Singapore.
Scenario 2:
Copyright registered in China has substantially the same effect as local registration, so separate local registration is unnecessary—Malaysia as an example
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As a member of the Berne Convention, Malaysia provides automatic copyright protection from the date on which a work or software program is created, and such copyright is recognized by other Berne Convention member countries. Copyright registered in China therefore has substantially the same effect as local registration, and separate registration in Malaysia is unnecessary.
Scenario 3:
Overseas copyright registration offers significant value—Thailand, Vietnam and the United States as examples
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In certain countries that, like China, are members of the Berne Convention, local copyright registration offers additional advantages. For example, a local registration certificate may be used as evidence in disputes without requiring additional translation, notarization or authentication, and may be more readily recognized by local authorities. Thailand and Vietnam are examples of such countries.
The United States is particularly worth mentioning as one of the jurisdictions in which overseas copyright registration is recommended. This is mainly because copyright registration in the United States can provide substantial value in the following respects:
(1) When bringing a copyright infringement action, the owner of a registered work may elect to claim statutory damages. Statutory damages may currently reach up to USD 150,000 for each registered work infringed, whereas the owner of an unregistered foreign work is limited to recovering actual damages.
(2) If the owner of a registered work prevails in a copyright infringement action, the owner may recover attorneys’ fees and litigation costs. By contrast, the owner of an unregistered foreign work cannot recover attorneys’ fees in an infringement action.
The essential purpose of overseas copyright registration is to transform an “automatically arising right” into an asset that can be evidenced, enforced and negotiated. Every step—from selecting jurisdictions and formulating a registration strategy to exercising the rights—affects the future potential for commercialization and the cost of enforcement.
We hope the above information will help applicants avoid unnecessary difficulties and apply clearer criteria when deciding whether to pursue overseas copyright registration.
